Opposition by FFAUF ITALIA S.P.A. to an application under section 92 of the Trade Marks Act 1995 (Cth) by Industria De Diseno Textil, S.A. (Inditex, S.A.) for removal of trade mark number 569495 (30) – PASTA ZARA...

[2022] ATMO 33

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by FFAUF ITALIA S.P.A. to an application under section 92 of the Trade Marks Act 1995 (Cth) by Industria De Diseno Textil, S.A. (Inditex, S.A.) for removal of trade mark number 569495 (30) – PASTA ZARA (Figurative) – in the name of FFAUF ITALIA S.P.A.

Delegate:	Nicholas Smith
Representation:	Opponent: Spruson & Ferguson Applicant: IP Solved (ANZ) Pty. Ltd.
Decision:	2022 ATMO 33 Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) application for removal - Removal Opponent’s evidence shows authorised use of the Trade Mark for the Registered Goods during the relevant period – Trade Mark to remain on the Register

Background

1. This decision is pursuant to an application made on 24 January 2019 under s 92(4)(b) of the Trade Marks Act 1995 (‘Act’) by Industria De Diseno Textil, S.A. (Inditex, S.A.) (‘Applicant’) to remove the trade mark detailed below from the Register of Trade Marks.  The application is made in respect of all the goods for which the trade mark is registered, that is, the application is for complete removal of the trade mark.

Registration No.	569495
Lodgement date	17 Dec 1991
Goods	Class 30: Fresh, dried, deep-frozen, ready-to-use (semi-cooked) alimentary pastas (‘Registered Goods’)
Owner	FFAUF ITALIA S.P.A.
Trade Mark	(‘Trade Mark’)

1. FFAUF ITALIA S.P.A. (‘Opponent’) has opposed the application to remove the Trade Mark, filing a Notice of Intention to Oppose removal on 1 April 2019 and a Statement of Grounds and Particulars (‘SGP’) on 29 April 2019.  The Applicant filed a Notice of Intention to Defend on 21 May 2019.

2. The Opponent subsequently filed evidence in support of its opposition to removal (‘EIS’).  The Applicant filed evidence in answer (‘EIA’) and the Opponent filed evidence in reply (‘EIR’).  This material will be discussed in more detail below.

3. Neither party requested a hearing and the matter came before me, a delegate of the Registrar of Trade Marks, for a decision on the written record.  This record consists of the Notice of Intention to Oppose Removal, SGP, written submissions and the following evidence:

   Evidence in Support
   Evidence in Answer

   • Declaration by Francesca Colubriale, Principal of Spruson & Ferguson Patent & Trade Mark Attorneys, the Opponent’s representative, dated 22 August 2019 (‘Colubriale 1’) together with Annexures FC1 to FC6.
   • Declaration by Antonio Abril Abadin, General Counsel and Secretary to the Board of the Applicant, dated 29 November 2019 (‘Abadin declaration’) together with Exhibits 1 to 18.

   Evidence in Reply

   • Declaration by Francesca Colubriale, dated 29 January 2020 (‘Colubriale 2’) together with Annexures FC7 to FC10.
   • Declaration by Emanouel Gaganis, director of Gaganis Bros Imported Food Wholesalers, dated 29 January 2020 (‘Gaganis declaration’) together with Annexures EG1 to EG5.

   The Relevant Provisions

4. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 of the Act relevantly provides:

   92  Application for removal of trade mark from Register etc.

   (4)An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

      (a)  …

   (b)that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

   (i)used the trade mark in Australia; or

   (ii)used the trade mark in good faith in Australia;

   in relation to the goods and/or services to which the application relates.

   Note 1:For file and month see section 6.

   Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

5. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Mark is the three year period ending on 24 December 2018 (‘relevant period’).

6. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application,[1] and I confirm that five years since filing the application have in fact passed.

   [1] Per s 93(2) of the Act prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 as applies in the present matter. The updated s 93(2) of the Act applies to Trade Marks filed from 29 February 2019 onwards.

7. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 of the Act which provides, relevantly to this matter:

   100  Burden on opponent to establish use of trade mark etc.

   (1) In any proceedings relating to an opposed application, it is for the opponent to rebut:

   (a) …
   (b)  …
   (c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

   […]

   (3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

   (a) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or
    (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

   (i)  the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
   (ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

   (c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

8. I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[2]

   [2] Pfizer Products Inc. v Karam [2006] FCA 1663 (Gyles J) and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

9. In accordance with s 101 I may decide to remove the Trade Mark from the Register for all or some of the goods identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Mark even if the grounds under which the application for removal was made are established.

10. I further note that a single bona fide use of the Trade Mark in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b),[3] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, overwhelmingly convincing proof’.[4]

    [3] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

    [4] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).

    Discussion

11. To successfully oppose the application the Opponent must establish that it has used the Trade Mark (or a substantially identical trade mark[5]) pursuant to s 100 of the Act (either through use or circumstances that were an obstacle to use in the relevant period). Use of the Trade Mark by an authorised user is taken to be use of the Trade Mark by the Opponent.[6] 

    [5] AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41, [10]-[21] (Hearing Officer Kirov).

    [6] Section 7(3) of the Act.

    Use of the Trade Mark in the relevant period

12. During the relevant period the Trade Mark was held by FFAUF S.A..  In 2019 the name of the owner of the Trade Mark was changed to the present Opponent. Colubriale 1 states that the Opponent is the successor in title to FFAUF S.A, which was a company incorporated in Luxembourg that moved to Italy and hence changed its name to the current Opponent on 2 May 2018. 

13. In 2010 FFAUF S.A. entered into a licence agreement (‘2010 Agreement’) with Pasta Zara S.p.A (‘Pasta Zara’) allowing Pasta Zara to use what is described as the PASTA ZARA trademark.  Colubriale 2 contains a copy of the 2010 Agreement between FFAUF S.A and Pasta Zara (including an English translation).  This 2010 Agreement contains provisions regarding quality control.  I also note that FAUFF S.A, the Opponent and Pasta Zara S.p.A. have at various points had directors in common.

14. Colubriale 1 annexes documents being invoices in the relevant period for the sale of pasta from Pasta Zara to Gaganis Bros Food Wholesalers, an Australian wholesale entity.  Each of the invoices displayed the image set out below (‘Pasta Zara Image’).  Colubriale 1 also attaches an updated catalogue of Pasta Zara pasta products displaying the Pasta Zara Image or similar images to the Pasta Zara Image.

15. Colubriale 1 also annexes printouts of a website published by Pasta Zara on that displays the Pasta Zara Image and a printout of the website which suggests that a Pasta Zara pasta product was available for sale to the Australian public on or around March 3, 2018.

16. The Gaganis Declaration states that Gaganis Bros Food Wholesalers have distributed pasta products in Australia under or by reference to the Trade Mark, supplied to it by Pasta Zara.  This declaration contains copies of invoices for the purchase of products under the Pasta Zara Image and photographs of the Pasta Zara products distributed by Gaganis Bros Food Wholesalers.  I note that the photographs were taken in 2019 but Mr Gaganis states that the products depicted were the same or similar to the products supplied in the relevant period.  The invoices and photographs of the pasta products contain the Pasta Zara Image or an image substantially identical to the Pasta Zara Image.  Finally, the Gaganis Declaration contains photographs from Gaganis Bros Food Wholesalers’ social media feeds, during and after the relevant period, depicting the Pasta Zara products that bear the Pasta Zara Image.

17. Most of the Abadin declaration is about the Applicant and its reputation in its ZARA mark.  It is not necessary to summarise here as this evidence is only relevant in respect of the exercise of discretion in the event that I find that the Opponent has not used the Trade Mark.  The Abadin declaration does assert that the license agreement between FFAUF S.A and Pasta Zara ceased to be valid upon the Opponent coming into existence.   Mr Abadin also speculates that the invoices to Colubriale 1 do not show sales of pasta under the Pasta Zara Image as Pasta Zara also produces pasta for private label purposes.

18. In considering the evidence I reach the following conclusions:

    a)Based on the evidence in Colubriale 1, including the invoices that display the Pasta Zara Image, and the statements and evidence in the Gaganis Declaration, I am satisfied that the Registered Goods bearing the Pasta Zara Image have been sold in Australia during the non-use period.   This is use of the Pasta Zara Image as a trade mark for the Registered Goods in the relevant period in Australia.

    b)When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

    In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[7]

    While there are differences between the Pasta Zara Image and the Trade Mark, such differences (such as the addition of the descriptive wording ‘Dal 1898’ and ‘Prodotto in Italia’) are minor. Each of the essential features of the Trade Mark is reproduced in the Pasta Zara Image and a total impression of resemblance emerges from the comparison.  The Pasta Zara Image is substantially identical to the Trade Mark.

    c)The final issue is whether the use of the Trade Mark by Pasta Zara (and its distributors in Australia) in the relevant period, was authorised by FFAUF S.A., the then holder of the Trade Mark.  The test is whether the use by Pasta Zara was under the control of the then trade mark holder FFAUF S.A..  I am satisfied that the Opponent has demonstrated that control existed through the combined effect of the 2010 Agreement, which contains detailed prescriptions allowing the licensor to exercise quality control, and the practical reality that the licensor and licensee at various points shared the common directors.  In the Full Federal Court decision of Trident Seafoods Corporation v Trident Foods Pty Ltd[8], the Full Court at paragraph 45 noted that as a matter of practicality control could be found in circumstances where the two companies shared the same directors:

    It must be inferred from the evidence that the two companies operated with a unity of purpose. Trident Foods held the trade marks. Manassen sold the products under the TRIDENT brand and thereby used the trade marks. In the primary judge’s view these arrangements showed nothing more than that Trident Foods acquiesced in Manassen’s use of the marks: PJ [179(4)] and [217]. In the present case, where there were common directors, the concept of mere acquiescence by the one company to the use by the other company (albeit that Manassen is the parent company) appears alien. As directors of Trident Foods, the directors had obligations to ensure the maintenance of the value in the marks. To that end Trident Foods necessarily controlled Manassen’s use of the marks by reason of the simple fact that it owned the marks and its directors, who were also Manassen’s directors, must have had one common purpose, being to maximise sales and to enhance the value of the brand.

    …

    …it is commercially unrealistic in the circumstances of the present case not to infer that the owner of the marks controlled the use of the marks because the common directors necessarily wished to ensure the maintenance and enhancement of the value of the brand.[9]

    It is not necessary to consider whether the 2010 Agreement remained valid following the transition of FFAUF S.A. to the Opponent as for the majority of the relevant period the holder of the trade mark and the licensor under the 2010 Agreement was one and the same (FFAUF S.A.).  Furthermore I do not accept the Applicant’s submissions that the 2010 licence agreement does not apply to the Trade Mark, as the agreement only specifies the PASTA ZARA mark and does not specifically refer to the Pasta Zara Image.  Given the practical connections between the companies, and the reasonable assumption that Pasta Zara has not being infringing the Opponent’s Trade Mark for the last 10 years, it is fair to infer that the 2010 Agreement both did cover and was treated by the parties as covering all trade marks containing the words ‘pasta zara’, including the Trade Mark.  

    [7] (1963) 109 CLR 407, 414.

    [8] [2019] FCAFC 10 (Reeves, Jagot and Rangiah JJ).

    [9] Ibid [45].

19. In summary I am satisfied that the Opponent has used the Trade Mark for the Registered Goods during the relevant period. As such it has satisfied the onus under s100(3)(a) of the Act.

    Decision

20. I decide that the Opponent has established its opposition to removal and the Trade Mark should not be removed from the Register. Accordingly, I decide not to remove trade mark registration 569495 from the Register in relation to any of the goods for which it is registered.

    Costs

21. The Opponent has been successful in relation to the application for removal of the Trade Mark and has requested its costs. I direct that costs in relation to the application to remove trade mark registration no. 569495 be awarded against the Applicant in accordance with the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

    Nicholas Smith
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    8 March 2022